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Trademark Application Examination Law India

Posted by : Trustman on | Jun 23,2015

Once the data entry (including scanning & Vienna codification of non-text trademarks) of application for registration of a trademark is complete the same is sent for examination. Examination of Trade Mark application will cover examination as to compliance with–
Filing requirements governed by procedure prescribed under the Trade Marks Act and Trade Marks Rules Substantive requirements for registrability of the mark In particular, the official assigned examination duties will scrutinize the application as to- Whether the application has been filed in the manner as prescribed in the Trade Marks Rules 2002, Whether any same/similar mark in respect of same/similar goods/services is there on record, Whether the trademark applied for registration can be accepted for registration under the Trade Marks Act 1999, Whether any restriction, condition or limitation is required to be imposed.
The Examiner will give a consolidated ‘Examination Report’ mentioning the objections (if any) as to the acceptance of application for registration; or as the case may be, forward a proposal to accept the application with or without any restriction, condition or limitation on the use of trademark. Examination report is to provide the list of conflicting marks on record.
The examiner will mention all deficiencies in the application and will raise all applicable objections to the acceptance of application for registration of trademark. The applicant is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. The reply to the Examination Report together with evidence of use of the trademark in India and other documents attached with the reply will be duly considered. In case the objections cannot be waived an opportunity of a Hearing will be given to the applicant. The application will thereafter be accepted with or without any restriction, condition or limitation on the use of trademark; or as the case may be, it will be refused for registration. The decision as to acceptance or refusal of the application will be communicated to the applicant. The accepted application will thereafter be advertised in the Trade Mark Journal.
Relevant laws or provisions to be referred to during Examination.
The development of law as reported in recognized international law reports such as Reports of Patent Cases (RPCs), European Trade Mark Reports (ETMRs), Fleet Street Reports (FSRs) the US Trade Marks Reports will continue to be followed as being only of persuasive value. To a large extent the practice of the Registry in India broadly corresponds with the practice prevailing in the U.K.
While the individual circumstances surrounding each application are paramount, it is to be noted that ‘Precedents’ are of great value, though not decisive. Section 91 of the Trade Marks Act, provides for an appeal against an order or decision of the Registrar to the Intellectual Property Appellate Board (IPAB). In some cases, parties may also invoke the writ jurisdiction of High Courts. It is obvious, therefore, that whenever the Registrar or any officer acting for him passes an order as a tribunal under the Act it should be a reasoned and a speaking order.[See Rule 40 of Trade Marks Rules, 2002].
In this connection, the principle laid down by the Supreme Court is to be kept in mind: “The Court insists upon disclosure of reasons in support of the order on two grounds – one, that the party aggrieved in a proceeding before the High Court or this Court has the opportunity to demonstrate that the reasons which persuaded the authority to reject its case were erroneous; the other, that the obligation to record reasons operates as a deterrent against possible arbitrary actions by the executive authority invested with judicial power” (Travancore Rayon v. Union of India)
The examination of trade marks for acceptability under the Trade Marks Act 1999 must be by reference to the provisions of that Act and Rules framed there under taking into account the established practice of the Registry and the law as laid down or endorsed by the Intellectual Property Appellate Board (IPAB) and by Courts in India which is binding on the Registrar.